the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

2015

Image of Email Address Symbol followed by the words Why I Use My Email Address as Applicant's Email Address on a Trademark ApplicationThings are so much easier nowadays. Most communications with the United States Patent and Trademark Office (“USPTO”) occur through email (assuming you’ve authorized that form of communication). How many of us even remember the nightmare that used to be Express Mail? In fact, it’s not even called Express Mail anymore—it’s now called Priority Mail Express. Anyway, communication with the USPTO is almost all about email now. continue reading→

Picture of a weird uncle to represent the supplemental register

The United States Patent and Trademark Office’s (“USPTO”) supplemental register reminds me of the odd relative every family seems to have. Essentially, the supplemental register is like your perpetually drunk uncle or aggressively new age aunt. They show up at Thanksgiving, and you think to yourself, why are you even here?

The supplemental register is weird because it is a register for marks that are not really marks at all. The Lanham Act states that “[a]ll marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … which are in lawful use in commerce … may be registered on the supplemental register.” 15 U.S.C. § 1091. So let me get this straight—marks that do not actually distinguish goods or services but that might one day be able to do so can be registered? Isn’t that just a way of registering a potential mark? Strange. continue reading→

Octane Fitness Trademark

The trademark infringement case is over. And now it is time to argue that it was an “exceptional case” that warrants attorneys’ fees under 15 U.S.C. § 1117(a) (also known as § 35 of the Lanham Act). Well, it appears that the U.S. Supreme Court has made it a little easier to meet the “exceptional case” requirement. continue reading→

Picture Showing Cybersquatting Text

It still surprises me how many trademark owners opt to address cybersquatting through a Uniform Domain Name Dispute Resolution Policy ("UDRP") proceeding instead of through a lawsuit in federal court. There are real reasons to choose federal court over a UDRP proceeding. continue reading→

Trademark Crowded Field
Whether trying to overcome a likelihood of confusion refusal by an examining attorney or litigating a Section 2(d) likelihood of confusion claim in an opposition proceeding, arguing that there is no likelihood of confusion due to a crowded field (many similar marks in use for similar goods or services) has pretty much been hit or miss. In other words, there has been little consistency by examining attorneys at the ex parte prosecution level or by the Trademark Trial and Appeal Board (“TTAB”) in oppositions or cancellations. But a pair of recent decisions by the Federal Circuit should help change that—hopefully. It appears that both examining attorneys and the TTAB need to give more careful consideration and afford greater weight to evidence of a crowded field.

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